Marking Requirements (Intended for a non-legal audience)
Updated February, 2016
1. What is trademark marking?
Trademark marking is the use of a commonly accepted symbol to signify that a word, logo, slogan, design or other sign functions as a trademark or service mark. Markings can also be used to describe some aspect of the mark (e.g., its ownership or registration status).
One common example of trademark marking is the use of the ® symbol, which conveys to the public that the mark is registered in the national trademark office of the country in which the goods are sold or the services provided.
Other common examples of trademark marking include the use of the “TM” symbol, to denote a claim of trademark rights, whether registered or unregistered; the “SM” symbol, to denote a service mark (discussed further below); or the notice “Registered Trademark” or its translation into the official language of the jurisdiction (e.g., “Marca Registrada” or “MR” in some countries where Spanish is the dominant language, and “Marque Déposée,” “Marque de Commerce” or their respective abbreviations, “MD” and “MC”).
Not all jurisdictions require or provide for the use of the ® symbol or a notice such as “Registered Trademark,” and trademark marking is treated differently in different countries. Accordingly, trademark owners should approach the subject of packaging or labeling carefully, to accommodate different national rules in each country where the mark is used.
2. What is the purpose of trademark marking?
Marking a trademark may serve a number of purposes, such as:
a. Identifying a mark as registered, where an appropriate registration mark is used;
b. Providing notice of the owner’s claim to the mark;
c. Distinguishing the mark from surrounding text or graphics;
d. Distinguishing the mark from another owner’s trademark when the two marks appear together on products, packaging or promotional materials or in advertising;
e. Directing the consumer to a notice that identifies the trademark owner, thereby reinforcing the public’s association of the mark with the owner; and
f. In certain jurisdictions, allowing for potential monetary damages in the event of litigation against a party that is infringing the owner’s mark.
3. What do the symbols TM and SM mean, and when can I use them?
The ® symbol indicates that a mark is registered in the national trademark office. If a mark is not registered, the symbol “TM” for “trademark” or “SM” for “service mark” often is used to indicate that even though a mark may not be nationally registered, the owner is nevertheless claiming rights in it. The use of the TM and SM designations informs the public that a word, logo, slogan, design, etc., is being used as a mark and reflects the owner’s intent to claim trademark rights in the mark. However, using one of these symbols does not guarantee that the owner’s mark will be protected under trademark laws.
The TM symbol is the recognized abbreviation for “trademark” and is usually placed above and following the mark; for example: ASTEROID™ athletic wear. In certain jurisdictions, the SM symbol is the recognized abbreviation for the term “service mark.” It is used in the same way as TM, but in connection with providing services rather than goods. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than the source of a product. The words “trademark” and “mark” are commonly used interchangeably to refer to both trademarks and service marks.
4. What if I do not use a trademark marking notice?
Use of the registration symbol or other notice is not mandatory in every jurisdiction; however, it is important, not only because it provides notice of the owner’s trademark rights but also because it may allow the owner to claim certain types of damages in lawsuits against infringers. For instance, in the United States, failure to use a registration notice limits the remedies available to a trademark owner in a lawsuit. Failure to use a registration notice may prevent a plaintiff from recovering damages and profits in a suit for infringement if the defendant is not shown to have actual notice of the registration.
Marking may also help a trademark owner maintain its rights in the mark by avoiding descriptive use of the mark in advertising and labeling. Such use can lead to “genericide,” the process by which a mark loses its distinctiveness when consumers use the mark as the name of the product or service.
5. Is there any other way that I can appropriately mark a trademark or a service mark?
By using an asterisk (*) or similar symbol to direct the consumer to a footnote indicating that the mark is registered or “is a trademark [service mark] of [company name].”
6. Do I need to include a marking symbol repeatedly in a particular advertisement when the trademark or service mark is repeated in the advertisement?
Generally, it is not necessary to mark every occurrence of a trademark in an advertisement or other promotional material. However, at a minimum, this identification should occur at least once in each advertisement, either the first time the mark is used or with the most prominent use of the mark. When in doubt, err on the side of “overmarking.” Remember that, apart from marking, a trademark or service mark should also be properly used (e.g., preferably as an adjective and distinguished from surrounding text by capitalization, distinct typeface, positioning, color and/or size).
Proper Trademark Use Presentation
A Guide to Proper Trademark Use for Media, Internet and Publishing Professionals
7. What marking issues should trademark owners be aware of when doing business in various countries?
In general, marking requirements must be examined on a per-country basis. Consulting with local counsel is always advisable. Some general guidelines are set out below.
a. Remember that trademark rights vary from country to country. Before using a mark or asserting rights in any country, take steps to verify those rights in that country.
b. Marking should conform to any requirements of local trademark law. Logically, marking should be in the local language(s) or otherwise meaningful to the people in the country in which the products or services are advertised and sold. Many countries recognize the use of the ® symbol to indicate a registered mark.
c. False or misleading marking with the ® symbol on international packaging can result in unfair competition claims, fines, imprisonment and other liability. In fact, in certain jurisdictions it is a criminal offense to falsely indicate that a trademark or part of a trademark is registered, or that certain goods or services are protected by a registered trademark or service mark when they are not. Examples of jurisdictions that consider false or misleading marking a criminal offense are Germany, Brunei, India, Japan and Korea.
d. Marking (including footnotes) may be necessary when the mark is imprinted on products or packaging by a licensee, the products are distributed by a person other than the mark owner and the distributor’s name appears on the product or packaging, or the marks of more than one owner appear together.
Additional INTA Resources
Country Guides: Essential Information on Trademark Protection Worldwide
Comprehensive information on trademark filing, prosecution, registration, maintenance and enforcement. See especially Section VI.D. Registration—Marking Requirements. INTA membership required.
Trademarks vs. Generic Terms Fact Sheet
Funeral for a Brand: How Trademarks Become Generic Presentation
Trademark Basics: A Guide for Business
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